Viagra patent to face challenge in Canada's top court

Natalie Stechyson, Postmedia News04.17.2012

The Supreme Court of Canada will hear an appeal into the patent case of Pfizer Canada Inc., which could see some competition in the erectile dysfunction drug industry if the top court rules in favour of Teva Canada Limited.

OTTAWA — Pfizer Canada Inc., could face some stiff market competition if Canada's top court rules the company's patent on the erectile-dysfunction drug Viagra is invalid.

The Supreme Court of Canada will hear a challenge to Pfizer's patent Wednesday from generic drug company Teva Canada Limited. Teva Canada, which wants to produce a generic version of the drug developed and manufactured by Pfizer, is arguing that the Viagra patent is invalid because Pfizer did not disclose sufficient information when it applied for it.

Specifically, Teva says Pfizer did not sufficiently disclose the exact compound that is effective in treating erectile dysfunction among a lengthy list of chemical compounds named in the patent, according to court documents.

"Our position is that a patent that maintains commercial secrecy over the one and only compound out of billions and billions that was made and tested and found (in secret) by Pfizer to work is invalid," said Ildiko Mehes, vice-president and general counsel for Teva Canada, in an email to Postmedia News.

"It does not meet the patent bargain: that of providing the public with an accurate and meaningful teaching in exchange for a monopoly. Our view is that Pfizer effectively hid a leaf in the forest."

A judgment on Wednesday's hearing is not expected for several months but if Teva is successful, not only could the company put a generic version of Viagra on the market immediately, but Teva could claim damages for all of the years of lost potential sales.

Teva will consider its future options if successful, but has not made any decisions at this time, Mehes said.

The case has wide implications for patent disclosure in Canada, said Richard Gold, a patent law expert and professor in the faculty of law at Montreal's McGill University.

The Federal Court has already ruled in favour of Pfizer, whose patent on the drug expires in 2014. If the Supreme Court upholds that decision, it would give skilled patent agents further license to try to hide, as much as possible, what exactly they invented, Gold said.

There is an inherent tension between what the patent applicant wants, which is protection but no disclosure, Gold said, and what the public wants — limited protection and great amounts of disclosure.

"The question is where is the court going to draw the line?" Gold said.

"The fact that the Supreme Court took this case, and they rarely do, can be seen as an indication that they're going to try to set limits about how far patent agents are allowed to go."

In less than a week, Abbotsford recording artists Hedley went from touring Canada with two supporting acts and a popular new album to pariahs ensnared in allegations of sexual misconduct. On Monday, accusations that band members Jacob Hoggard, Dave Rosin, Tommy Mac and Jay Benison had engaged in sexual behaviour with teenage girls surfaced on Twitter […]

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